The Oyez Project: Economic Activity Issues - Trademark Decisions

Dastar Corp. v. Twentieth Century Fox Film Corp.

Does the Lanham Act prevent the unaccredited copying of a work? If so, may a court double a profit award under the Act in order to deter future infringing conduct?

No; the Court did not answer the question. In an 8-0 opinion delivered by Justice Antonin Scalia, the Court held that section 43(a) of the Lanham Act does not prevent the unaccredited copying of an uncopyrighted work. Under the Lanham Act, the Court reasoned that no false designation of origin was shown since the phrase "origin of goods," as used in the Act, did not connote the person or entity that originated the ideas contained in the video, but instead referred only to the producer's tangible video product. Thus, Dastar was the "origin" of the products it sold as its own, without acknowledging the series, because it marketed a video that copied a public domain television series. Justice Stephen G. Breyer took no part in the consideration or decision of this case.

Inwood Laboratories v. Ives Laboratories

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K Mart Corp. v. Cartier, Inc.

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K Mart Corp. v. Cartier, Inc.

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KP Permanent Make-Up, Inc. v. Lasting Impression, Inc.

Did the classic fair use defense to trademark infringement require the party asserting the defense to demonstrate an absence or likelihood of confusion?

No. In a 9-0 opinion delivered by Justice David H. Souter, the Court held that a party raising the classic defense of fair use did not need to negate any likelihood that the practice under question would confuse consumers about the origin of the goods. The Court interpreted federal trademark law as placing the burden of showing likelihood of confusion on the party charging infringement. Moreover, Congress "said nothing about likelihood of confusion in setting out the elements of the fair use defense."

Moseley v. V Secret Catalogue, Inc.

Does the Federal Trademark Dilution Act require objective proof of actual injury to the economic value of a famous mark for relief?

Yes. Justice John Paul Stevens delivered the opinion for a unanimous Court with respect to parts I, II, and IV of the opinion, which held that the FTDA requires proof of actual dilution. The Court reasoned this standard, as opposed to a presumption of harm arising from a subjective "likelihood of dilution" standard, controlled. "There is a complete absence of evidence of any lessening of the capacity of the Victoria's Secret mark to identify and distinguish goods or services sold in Victoria's Secret stores or advertised in its catalogs," wrote Justice Stevens. Justice Antonin Scalia did not join the portion of the Court's opinion that discussed legislative intent. Justice Anthony M. Kennedy filed a concurring opinion.

Park'n Fly, Inc. v. Dollar Park And Fly, Inc.

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Qualitex Co. v. Jacobson Products Co., Inc.

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Two Pesos, Inc. v. Taco Cabana, Inc.

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Wal-Mart Stores Inc. v. Samara Bros. Inc.

Is a product's design is distinctive, and therefore protectible, from "knockoffs" in an action for infringement of unregistered trade dress under section 43(a) of the Trademark Act of 1946?

No. In a unanimous opinion delivered by Justice Antonin Scalia, the Court held that "[i]n a section 43(a) action for infringement of unregistered trade dress, a product's design is distinctive, and therefore protectible, only upon a showing of secondary meaning. The fact that product design almost invariably serves purposes other than source identification not only renders inherent distinctiveness problematic; it also renders application of an inherent-distinctiveness principle more harmful to other consumer interests," Justice Scalia wrote for the Court. "Consumers should not be deprived of the benefits of competition with regard to the utilitarian and esthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness," Justice Scalia concluded.